Ex Parte Wong et al

Patent Trial and Appeal Board

Feb 27, 2019

14385282 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/385,282 09/15/2014
48116 7590
FAY SHARPE/NOKIA
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
03/01/2019
FIRST NAMED INVENTOR
Shin Horng Wong
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
LUTZ 201914US01 3048
EXAMINER
CHOWDHURY, HAR UN UR R
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
03/01/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@faysharpe.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIN HORNG WONG and MATTHEW BAKER
Appeal2018-005434
Application 14/385,282 1
Technology Center 2400
Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants' Brief ("Br.") identifies Alcatel/Lucent as the real party in
interest. Br. 1.
Appeal2018-005434
Application 14/385,282
CLAIMED SUBJECT MATTER
The claims are directed to multiple-input-multiple-output (mimo)
communication. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of determining at user equipment a
transport block size for a secondary stream transmitted in
addition to a primary stream by said user equipment when
supporting Multiple Input Multiple Output communications with
a base station of a wireless telecommunications network, said
method comprising:
receiving a grant associated with said secondary stream;
and
determining a transport block size for said secondary
stream in accordance with a relationship between grant and
transport block size, said relationship differing from a primary
relationship between grant and transport block size used to
determine a primary transport block size for said primary stream.
Br. 13 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
(1) Qualcomm Incorporated, "Explaining Scheduler Operation for
UL-MIMD with an Example," prepared for 3GPP TSG RAN WG 1 Meeting
#65, Agenda Item 5.5, Rl-111258 (2011) ("Qualcomm").
(2) Huawei, et al., "Initial Link-Level Simulation Results for UL
MIMD," prepared for 3GPP TSG-RAN WG 1 Meeting #66, Agenda Item
5.6.3.2, Rl-112208 (2011) ("Huawei").
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Application 14/385,282
REJECTIONS
Claims 1, 14, and 15 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 11.
Claims 1-9 and 12-16 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Qualcomm. Final Act. 12-21.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Qualcomm and Huawei. Final Act. 21-22.
ISSUES
First Issue: Has the Examiner erred in finding Qualcomm discloses
each limitation of claim 1?
Second Issue: Has the Examiner erred in finding Qualcomm and
Huawei teach or suggest "index comprises an Enhanced Data Channel
Transport Format Combination Identifier determined from the grant," as
recited in claims 10 and 11?
Third Issue: Has the Examiner erred in rejecting the claims for lack of
written description?
ANALYSIS
The Examiner rejects claim 1 as anticipated by Qualcomm, finding
that it discloses each and every limitation recited in the claim. Appellants
contend Qualcomm describes a "simulation methodology for link evaluation
of UL MIMO," and that the scope of claim 1 does not extend to simulations
performed outside of a "real world physical network with user equipment."
Br. 7-8. In response to this contention, the Examiner issues a type of
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Application 14/385,282
"Catch-22" rejection: either the simulation disclosed by Qualcomm is
within the scope of claim 1, in which case the claim is anticipated; or,
claim 1 does not cover performing the method in a simulated environment,
in which case the claim includes an implicit negative limitation not
adequately described in Appellants' Specification. Ans. 7-10.
Claim Interpretation
Resolution of the issues raised in this appeal turns primarily on an
issue of claim construction, which is a matter of law that we review de nova.
Cf Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir.
2009)-whether the preamble of claim 1 is limiting such that it covers
performing the recited method only in a real world physical network with
user equipment, as proffered by Appellants.
The preamble of claim 1 recites:
[a] method of determining at user equipment a transport block
size for a secondary stream transmitted in addition to a primary
stream by said user equipment when supporting Multiple Input
Multiple Output communications with a base station of a
wireless telecommunications network, said method comprising:
Br. 13 (Claims Appendix). Appellants argue the preamble limits the claim
such that the recited method steps in claim 1 must be performed "at user
equipment." Br. 6 ("Applicant notes that the application describes a
physical network having actual user equipment and not a simulation."), Br. 9
("the claim specifically indicates that the user equipment determines a
transport block size for a secondary stream according to the relationship
grant".). Appellants further argue Qualcomm differs from the claimed
invention in that it recites a method performed within a simulated
telecommunications environment, and therefore does not disclose the
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Application 14/385,282
preamble limitation of "determining at user equipment a transport block
size .... " Br. 7-9.
In issues involving claims under examination, we interpret
Appellants' claims according to their broadest reasonable interpretation
consistent with the specification. In re ICON Health & Fitness, 496 F.3d
1374, 1379 (Fed. Cir. 2007). "Generally, the preamble does not limit the
claims." Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1236
(Fed. Cir. 2017) (quoting Allen Eng 'g Corp. v. Bartell Indus., Inc., 299 F.3d
1336, 1346 (Fed. Cir. 2002)). In determining whether a preamble is
limiting, our reviewing court instructs us to consider whether the preamble is
"necessary to give life, meaning and vitality" to the claim. C. W. Zumbiel
Co. v. Kappas, 702 F.3d 1371, 1385 (Fed. Cir. 2012) (citation omitted).
We conclude that, under its broadest reasonable interpretation, the
preamble phrase "at user equipment" is an expression of intended use, and
does not limit the claim such that the method must be performed on or by the
recited "user equipment." The Specification states that "[a] person of skill in
the art would readily recognize that steps of various above-described
methods can be performed by programmed computers." Spec. 10, 11. 26-27.
The specification further states that "[ t ]he embodiments are also intended to
cover computers programmed to perform said steps of the above-described
methods." Spec. 10, 11. 33-35.
These statements in the Specification support an alternative
interpretation that the claimed method can be performed on computers more
generally, and need not be limited to "user equipment." Further, the phrase
"user equipment" does not appear in the body of the claim; it appears only in
the preamble. As such, the "user equipment" in the preamble does not
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provide antecedent basis for the body of the claimed method. Finally, the
Specification does not define "user equipment" as any particular type of
device. Because (1) preambles are not generally limiting, (2) we apply the
broadest reasonable interpretation of the claim in the Examination context,
(3) the Specification states that that "programmed computers" (and not just
"user equipment") can carry out the claimed method, and ( 4) "user
equipment" appears only in the preamble of claim 1, we conclude the phrase
"user equipment" recited in the preamble of claim 1, is not limiting. 2
First Issue--Anticipation
In rejecting claim 1, the Examiner finds that Qualcomm discloses
each limitation of claim 1. Final Act. 12-13 ( citing Qualcomm§§ 2-3). As
noted above, Appellants do not argue that Qualcomm fails to disclose the
"receiving a grant" step and "determining a transport block size." Instead,
Appellants contend that Qualcomm does not anticipate the claim because the
"receiving" and the "determining" is performed by simulation software and
not on actual "user equipment." Br. 8-9. As we explained above, however,
the "user equipment" recited in the preamble does not limit the claim, and
therefore cannot be used to distinguish the claim over the simulations
performed in Qualcomm. We agree with the Examiner that Qualcomm
discloses the recited limitations as recited in the body of claim 1, and we
adopt as our own, the analysis and findings set forth on pages 15-19 of the
Examiner's Answer. Accordingly, we are not persuaded the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 102(b ). For the same reasons, we also
2 Our analysis also applies to independent claim 14, which includes ''user
equipment" in the preamble, but does not include the phrase in the body of
the claim.
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do not find error in the Examiner's rejection of independent claims 14
and 15. Appellants do not argue separately for patentability of dependent
claims 2-9, 12, 13, and 15, which fall for the same reasons as their
respective independent claims.
Second Issue-Obviousness of Claims 10 and 11
Appellants present separate arguments for patentability of claims 10
and 11, which are rejected under 35 U.S.C. § 103 as unpatentable over
Qualcomm and Huawei. These claims each recite, by virtue of their
dependency from claim 9, using the grant to identify the index of a lookup
table that has the transport block size for the secondary stream. App. Br. 14
(Claims Appendix). Claims 10 specifies that the lookup table "index
comprises an Enhanced Data Channel Transport Format Combination
Identifier determined from the grant," while claim 11 further specifies that
the determination is based also on "an offset value." Id.
The Examiner finds Qualcomm discloses using a lookup table to map
SNR (signal to noise ratio) to TBS (transport block size). Final Act. 21-22
( citing Qualcomm Table 1 ). The Examiner acknowledges that Qualcomm' s
lookup table index does not have an index that "comprises an Enhanced
Data Channel Transport Format Combination Identifier determined from the
grant," as recited in claim 10. Final Act. 21. The Examiner cites Huawei
(§§ 2.3 and 2.4) for this limitation. finding it describes creating the E-TFCI
( which is an acronym for (E)nhanced Data Channel (T)ransport (F)ormat
(C)ombination (I)dentifier) table from the "grant mechanism in the uplink"
(§ 2.3) and using the E-TFCI table to determine the secondary transport
block size(§ 2.4). Final Act. 22.
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Appellants argue that "Huawei § 2.4 discloses a SNR-TBS mapping
table that is used to determine a secondary transport block size. The
transport block size is determined by looking up an SNR value needed to
achieve a certain BLEA target for a presumed block size," and that "the
table lookup described in Huawei describes determining a transport block
size utilizing a value needed to achieve a target number and does not
disclose using a grant to determine an index with an Enhanced Data Channel
Transport Format Combination Identifier." Br. 10.
Although Appellants are correct that Huawei describes using a SNR-
TBS mapping table to determine a secondary transport size, we are not
persuaded by their argument. Appellants' argument does not address
Huawei' s description of the creation and use of the E-TFCI table cited by the
Examiner. Final Act. 22. Specifically, Appellants do not explain why the
Examiner's characterization of the E-TFCI being determined from "the grant
mechanism in the uplink" ( citing Huawei § 2 .3) combined with Huawei' s
disclosure that "the secondary transport block size is selected using the
legacy E-TFC selection method," (Huawei § 2.4) does not teach or suggest
the limitation "the index comprises an Enhanced Data Channel Transport
Format Combination Identifier determined from the grant," as recited in the
claims. Accordingly, we are not persuaded the Examiner erred in
concluding claims 10 and 11 would have been obvious over Qualcomm and
Huawei, and we sustain their rejection under 35 U.S.C. § 103.
Third Issue-Written Description
We reverse the Examiner's rejection for lack of written description.
The rationale behind the Examiner's rejection is that, based on Appellants'
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Application 14/385,282
assertions regarding claim scope, the claims include an implicit negative
limitation not supported by the Specification. However, for reasons noted
supra, we disagree with Appellants' interpretation of the claims because it is
unduly narrow under the broadest reasonable interpretation standard.
Consequently, we do not agree with the Examiner that the claims include
implicit negative limitations lacking support in the Specification.
Accordingly, we are persuaded the Examiner erred in rejecting the
independent claims for lack of written description, and we do not sustain the
rejection under 35 U.S.C. § 112, first paragraph.
DECISION
We reverse the Examiner's rejection under 35 U.S.C. § 112, first
paragraph of claims 1, 14, and 15.
We affirm the Examiner's rejection under 35 U.S.C. § 102(b) of
claims 1-9 and 12-16.
We affirm the Examiner's rejection under 35 U.S.C. § 103(a) of
claims 10 and 11.
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision to reject the claims.
37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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